T 0265/92 () of 10.5.1993

Summary of Facts and Submissions

I. European patent application No. 86 100 769.8, filed on 21 January 1986 claiming a priority of 21 February 1985 and published under No. 0 192 066, was refused by a decision of the Examining Division dated 17 October 1991.

The reason given for the refusal was that the subject- matter of Claims 1 and 2 filed on 17 January 1991 lacked an inventive step having regard to the following prior art documents

D1: IBM Technical Disclosure Bulletin, Vol.24, No.11B, April 1982, pages 5867, 5868, and

D2: EP-A-0 116 694.

II. On 20 December 1991 the Applicant lodged an appeal against this decision and paid the prescribed appeal fee. On 25 February 1992 a statement setting out the Grounds of Appeal was filed, together with an auxiliary Claim 1.

The Appellant's main request is the grant of a patent on the basis of the following documents:

Claims: 1 and 2 as filed on 17 January 1991

Description: Columns 1 to 9 as published

Drawing: Figure 1 as published.

In accordance with the auxiliary request the application consists of the description and drawing as indicated above, together with Claim 1 as filed on 25 February 1992.

III. In a communication pursuant to Article 110(2) EPC dated 24 July 1992, the Rapporteur expressed doubts as to whether the subject-matter of Claim 1 according to the main request was at an invention within the meaning of Article 52(1) EPC. It was further considered that, even if it were, there appeared to be no inventive step having regard to the disclosures of each of D1 and D2.

The same considerations were said to apply to the auxiliary request.

IV. Oral proceedings were held on 10 May 1993. The Appellant's representative did not attend, having previously announced by telefax of 6 May 1993 that he would not be doing so. The Board accordingly reached its decision in his absence.

V. Claim 1 according to the main request reads:

"A screen oriented process, in an open computer system including:

an operating system, and

a bus to which pluggable cards known as adapters may be connected,

for configuring said operating system, including the steps of:

initially creating device dependent information files for a plurality of device types consisting in a device attached to one of said adapters which may be installed in said computer system,

installing said files into said computer system, and

responding to a user initiated configuration command by prompting the user to enter one of a plurality of commands including an add device command whereby said user may specify which new device type he wants to install in said computer system, and a change device command whereby said user may specify which device type already installed in said system he wants to change,

said process being characterized in that said device dependent information files include adapter specific information together with device specific information, and that it further includes the steps of:

responding to the change device command by displaying the device dependent information file for the device type specified by the user so that said user has the option of changing either or both the adapter specific information and the device specific information in one step, and

passing the device dependent information as changed by the user to said operating system."

VI. Claim 1 according to the auxiliary request reads:

"A screen oriented process for configuring devices in an open computer system including an operating system having device drivers, each device which may be installed in the system being connected to a bus in the computer system by an adapter, wherein said operating system is run as a virtual machine on a virtual resource manager and the operating system has devices in the virtual resource manager, said process including the steps of:

initially creating device dependent information files for a plurality of devices and device types which may be installed in said computer system,

installing said files into said computer system, and

responding to a user initiated configuration command by prompting the user to enter one of a plurality of commands including an add device command whereby said user may specify which new device type he wants to install in said computer system, and a change device command whereby said user may specify which device type already installed in said system he wants to change,

said process being characterized in that said device dependent information files include adapter specific information together with device specific information, and that it further includes the steps of:

responding to the change device command by:

displaying the device dependent information file for the device type specified by the user so that said user has the option of changing either or both the adapter specific information and the device specific information in one step,

responding to the add device command by:

displaying a list of predefined devices and adapters of the device type specified by the user, and prompting the user to choose one of the predefined devices and adapters in the list,

after the user has chosen one of the predefined devices and adapters from the list, asking the user if the device dependent information file for the chosen predefined device and adapter is to be displayed, and if so,

displaying the device dependent information file for the chosen predefined device and adapter so that the user has the option of modifying either or both the adapter specific information and the device specific information in one step, and

passing the device dependent information to the appropriate device driver of said operating system, determining whether the virtual resource manager device dependent information has been changed, and if so, passing the operating system device driver information to the appropriate device driver, and

passing the virtual resource manager device driver [information] to bind the operating system device driver and the virtual resource manager device driver using the device dependent information."

In response to the Board's communication the Appellant acknowledged that the word "information" should be added after "driver" in the last paragraph above.

VII. The Appellant's arguments in support of the patentability of the subject-matter of Claim 1 can be summarised as follows.

The invention is concerned with the installation of devices attached to adapters in an open computer system. In order to install a device, it is necessary to specify certain information about the device and the corresponding adapter and pass that information to the operating system. This is done by the user in accordance with the screen oriented process of Claim 1. The outstanding feature of the process is that the user always perceives the device dependent information and the adapter dependent information as a single entity.

According to D2 only device dependent information has to be specified. This is because adapters would either be fixed to the computer (in this case a main-frame) or comply with fixed requirements set by the system manufacturer, so that the operating system would be able to deduce automatically from a device definition the necessary adapter definition. D2 therefore does not suggest specifying both device and adapter specific information, and even less suggests doing it in such a way that the user perceives this information as a single entity.

Reasons for the Decision

1. The appeal is admissible.

2. Admissibility of the amendments

The Board is satisfied that no subject-matter has been added to the application as filed, so that Article 123(2) EPC is complied with.

3. Patentability (Article 52(2) EPC)

3.1. The Board's communication raised the issue of whether the claimed screen oriented process of the main request is an invention within the meaning of Article 52 EPC. It was initially considered that although the overall effect of the process is the installation or modification of devices and adapters in a computer system, the problem to be solved is the absence of required information as to the adaptor characteristics and thus is essentially non-technical. Moreover, in order to obtain the required information to install the devices the user was said to play an important role. The user observes and makes choices based on the information content of previously inputted data, i.e. the device characteristics not known to the system. If the user were neglected, the effect of the process would be limited to the storage and display of data. It was considered that the difference from prior art lay in the information content: the presence of adapter-specific as opposed to device-specific information.

3.2. In spite of these initial doubts, the Board concludes that the subject-matter of Claim 1 is not excluded under Article 52(2) EPC. The reasons for this view are as follows. It is clear that the installation or modification of devices and adapters in a computer system is technical in nature in that the final result is a differently configured computer. Once the necessary hardware modifications have been made corresponding device and adapter information must be conveyed to the operating system. According to the jurisprudence of the Boards of Appeal it is not necessary that all the features of an invention be technical in nature, but a claim containing a mixture of technical and non-technical features must involve some contribution to the art in a field not excluded from patentability (see, for example, T 38/86, OJ EPO 1989, 384). Thus, it does not matter if features as such - for example the presentation of device and adapter specific information - are excluded from patentability, as long as they contribute in some way to a technical effect. In the present case, the process of passing device and adapter characteristics of the devices to be installed or modified to the operating system clearly contributes to the ultimate technical effect, namely an installed adapter and device.

Thus the subject-matter of Claim 1 is not considered to fall within one of the exclusions of Article 52(2) EPC.

4. Novelty

4.1. It is common ground that the single most relevant prior art document is D2, the first part of Claim 1 of the main request setting out the features which are known in combination from D2. This document discloses a screen oriented process for configuring an operating system of a computer system. A bus to which various devices may be connected is included in the computer system. A menu and/or screen presentation enables device definitions to be built, i.e. device dependent information files are created for a plurality of device types and installed into the computer system. In response to a user-initiated configuration command the user may choose between adding a device, in which case the user specifies the new device type to be installed, and changing a device, requiring the user to specify the installed device type to be changed.

4.2. In addition to the above-mentioned features of the claim preamble, D2 discloses displaying the device dependent information file for the device specified by the user so that he may change it, and thereafter passing the modified device dependent information to the operating system.

4.3. The following features of Claim 1 of the main request are not directly and unambiguously derivable from D2:

the computer system with which the process is used is of the "open" kind, i.e. it does not have a proprietary bus and can be configured to the needs of the end user using peripheral devices from different manufacturers;

the devices are attached to pluggable cards referred to as "adapters"; and

the device dependent information files include, in addition to the device specific information, adapter specific information, which may be changed by the user.

The process of Claim 1 according to the main request is accordingly new (Article 54 EPC).

4.4. Claim 1 according to the auxiliary request is more limited than that of the main request. Its subject-matter is thus also new.

5. Inventive step

5.1. Main request

5.1.1. The features of Claim 1 not known from D2, see point 4.3 above, in essence specify that the process is usable in an open computer system and that the user be given the opportunity not only of changing the device-specific information but also adapter-specific information, which information is then passed to the operating system. In the Grounds of Appeal the Appellant stresses the importance of being able to define the adapter data. It is stated that large data processing systems, such as contemplated in D2, would be able to deduce from a device definition the associated adapter definition, but in the environment of the application - open computer systems not having a proprietary bus - there is no way for the system to deduce the adapter definition; this data must be provided by the user.

5.1.2. This argument does not, in the Board's view, lead to the conclusion that the claimed process involves an inventive step. It indeed suggests the contrary: if a configuring process for devices is known from D2 then the skilled man, faced with the problem of additionally configuring adapters in an open computer system, would have an obvious solution by applying a similar process to the adapters. From page 1, third paragraph of D2 it appears that detailed source code statements have to be written defining not only the device itself but also "the related control units and channels to be affected by the device". In other words, the necessary information has to be supplied to the computer. If an open computer system cannot by itself furnish the parameters of an adapter to be installed in that the necessary code is not installed, then it seems self-evident that the operator must provide that information. The obvious way of doing so is in conjunction with the device-specific information as in D2.

5.1.3. The Board has considered if there might have existed a prejudice against allowing a user to modify adapter information. This does not however appear to be the case. It is stated in the description (column 1) that "personal computers have come into widespread use by a variety of people" and that "a wide variety of peripheral devices and device adapters are available". With the growing number of peripherals it was clear that a computer offering only a "limited selection" (description, column 1, line 37) of devices and adapters was no longer adequate. There was thus clearly no prejudice against defining an adapter as well as a device.

The Board thus concludes that the subject-matter of Claim 1 of the main request does not involve an inventive step.

5.1.4. Claim 2 of the main request adds to Claim 1 details of the "add-device" command. Since such a command is known from D2 it follows that the above arguments on the "change-device" command apply equally to Claim 2 and the subject-matter of claim 2 also lacks an inventive step.

5.2. Auxiliary request

5.2.1. The Board infers from the discussion at column 9 of the published application that the Appellant accepts that at the priority date of the present application a system comprising an operating system run as a virtual machine (VM) on a virtual resource manager (VRM) was common general knowledge and that the use in such a system of a screen oriented process for configuring devices according to the first part of Claim 1 was also known. The claim specifies in its characterising part that parameters of devices and adapters be selectable in a process corresponding to that of the main request, with the additional feature that the device-dependent information be passed to the VM and, if necessary, to the VRM. The skilled man, familiar with the structure of a VM-based computer system, would be well aware of the requirements concerning device-specific and adapter-specific information. In particular, he would know that VRM device driver information is "adapter and hardware specific" (description, column 9, line 36) and would realise that, consequently, modifications would generally be made to both and would have to be notified to the VRM.

5.2.2. Since the subject-matter of the main request is considered to lack an inventive step it follows that the application of this subject-matter to a VM-based system must also lack an inventive step.

ORDER

For these reasons, it is decided that:

The appeal is dismissed.